Recently, my friends at Slamwire were served a cease and desist order for their site Realtorclix. Realtorclix was a social network for Realtors to blog, share their listings and otherwise chat about the industry.

Simple, right?

Only if you aren’t aware of the fact that the term Realtor is actually a registered trademark of the National Association of Realtors. The question becomes what is the proper place for a trademark as it relates to domain names.

Trademark Law

When dealing with trademarks, the case law states that the acid test for determining whether a trademark has become a generic term is as follows, “…First, what is the genus of goods or services at issue? Second, is the term … understood by the relevant public primarily to refer to that genus of goods or services?”

As a result, companies fight hard to protect their trademark from dilution. This is why even companies like Google get upset when their name is used as a proxy for “searching.” The question I have is whether a site like Realtorclix dilutes the trademark sufficiently to fall under the purview of the NAR.

If you look at blogs, you will see quite a few instances of trademarks being used without explicit permission of the trademark holders. An example that comes to mind is Google Blogoscoped, a site that unofficially follows the progress of Google. They take advertisement (thus can reasonable be called a commercial entity) yet they seem to be allowed to use the term “Google” in their domain name. The reason, I imagine, is that it is very clear that this site has nothing at all to do with Google as a company and thus does not affect the Google trademark in anyway.

For sites that use common misspellings of Google in order to drive traffic and mislead consumers, it is often the case that they have been asked to shut down or change their names. In these cases it is usually clear that they are relying heavily on the Google brand to prop up their domains.

How do these two examples relate to the Realtorclix case? My argument, purely on the basis of semantics would be that Realtorclix, not Realtor Clix or Realtor Click never uses the trademark “Realtor.” More specifically, the term Realtor is in no way used to drive traffic or prop up the brand.

In fact, at worst the argument could be made that Realtorclix is a portmanteau. Even then, does it seem reasonable that because a word contains a trademark that it should also fall under that trademark’s jurisdiction? Further, at what point should the line be drawn?

I don’t know enough about that case law around trademarks to be able to answer these questions, but there are certainly examples where using a trademark as a part of a larger phrase was not seen as a dilution of the trademark. Especially when there is a strong argument that Realtor as a term should already be a part of the public domain.

Web 2.0 Roundup

What do you think? Does the NAR have grounds to issue a cease and desist to get Realtorclix to change its domain name, or is this an abuse of trademark law? I would love to hear from someone with some legal background.

[Thanks to Joesph Ferrara for helping me source this article. Be sure to subscribe to the RSS feed before leaving. Photo Credit]